Trademark registration in China is similar to any other country. Even so, in order to reach the right choice of action, you must at least understand the fundamentals of a trademark and a China trademark application.
WHAT IS A TRADEMARK?
Brands should be distinct from each other and trademarks give that quality. Trademarks are recognizable words, symbols and designs that identify a product and service’s provider or brand. These marks may be found on the packaging of the product, labels, or on the product itself.
WHAT TRADEMARKS CAN RECEIVE PROTECTION?
According to the law, trademarks may receive legal protection for as long as the name, logo, and / or other marketing devices are distinctive and memorable. But trademarks with generic words like “Corn Flakes” will receive less protection.
OBTAINING PROTECTION THROUGH TRADEMARK
The best and most effective way to protect your trademark is to get a trademark registration in China through a China trademark application. A registered trademark can acquire more protection from the law than unregistered marks. Unregistered trademarks may enjoy this privilege although it is limited.
SCOPE OF PROTECTION
In general, the trademark law protects the owner’s commercial identity by giving him / her exclusive rights to use the trademark for his products and services. The owner has the right to sue an infringer or potential infringer under the following conditions:
· Any sign identical with the trademark granted with legal protection
· Any sign where, because of its similarity of the trademark, causes confusion in the market
· Any sign that is identical with the trademark which is designated for goods and services unlike those of the registered trademark.
The rights are also only limit to the territory where the trademark is registered.
CHINA TRADEMARK APPLICATION FOR REGISTRATION FACTS
China Trademark Office under the State Administration for Industry and Commerce is the authoritative entity that administers the registration system in China. The Trademark Management Office under SAIC is the administrative arm responsible for managing all trademark-related matters, while Trademark Affairs Offices, set up in various major cities, are trademark agents designated by the state under the supervision of SAIC. The Trademark Review and Adjudication Board, also under SAIC, is responsible for handling disputes related to trademarks. Provincial-level administration offices for industry and commerce handle matters concerning trademarks under their jurisdiction, such as protecting the exclusive right to use registered trademarks and investigating acts of trademark infringement.
Foreigners, both individuals and companies, intending to apply for trademark registration in China are required to file an application in conformity with relevant agreements reckoned between the country to which the applicant belongs and China or to relevant international treaties to which both countries are parties, or on the principle of reciprocity.
Foreign-invested enterprises (FIEs) may apply directly or through trademark agents for a trademark registration, although possessing a trademark agent is most advisable.
REQUIREMENTS AND SPECIFICATIONS
· In applying for a registration, the following files should be submitted:
- Application for trademark registration
- Power of attorney
- 5 copies of the color reproductions of the Trademark
- 1 copy of the black and white version of the design
· The reproductions should be illustrated clearly and should be less than 10 cm but more than 5 cm each. Photographs may be used.
· The application should be provided with Chinese translations, including the trademark itself.
· If the registration is applied for a three-dimensional mark, the applicant should state such in the application and submit reproductions of the three-dimensional shape.
· When applying for registration of a collective mark, the applicant should state such in the application and submit a certificate of qualification for the administration of the use of the mark
· When an application has passed the examination, a preliminary approval will be granted and the trademark will be published though any person may, within three months from the date of publication of the trademark, file an opposition against the trademark. CTMO will send the Application for Trademark Opposition to the opposed party for a response to be made within 30 days as from the receipt of notification. CTMO will then make an adjudication based on the facts and grounds presented by both parties.
RIGHT OF PRIORITY IN THE APPLICATION FOR A TRADEMARK REGISTRATION
Within six months from the date of the applicant’s first-time application for registration of a trademark in a foreign country, applies for registration of the same trademark in the same class in China, he / she may enjoy the right of priority by means of the relevant agreement between that foreign country and China or any relevant international treaties to which both countries are accomplices, or of the principle of reciprocity.
The applicant of the trademark is entitled to the right of priority for a period of six months from the date of the display when a trademark is used for the first time.
APPLICATION FOR CHANGE OF DETAIL OF A REGISTERED MARK
When there is a change the name or address of a trademark registrant, the registrant should make the same modifications with all his / her registered trademarks. To change the name of a trademark registrant, a document issued by the registration organization should be submitted to support the changes.
REGISTERED TRADEMARK ASSIGNMENT
When the registrant decides to assign his / her trademark to someone else, both the assignor and the assignee must submit an application of registered trademark to the trademark office supported by legal documents. Upon approval, a certificate will be provided.
AUTHORIZED USE OF THE REGISTERED TRADEMARK
A trademark registrant may authorize other persons to use his registered trademark by signing a legal contract. The licensor should file a copy of the contract within three months from the signing of the contract to record it with the CTMO. Parties authorized to use the registered trademark should display the name of the licensee and the place of production of the goods on their labels using the licensed trademark.
RE-ISSUANCE OF THE TRADEMARK REGISTRATION CERTIFICATE
If by chance, the certificate is lost or damaged, the registrant must apply for re-issuance of the certificate and file the necessary requirements to the CTMO. If is it lost, a declaration should be published in the Trademark Gazette while damaged certificates should be returned to the CTMO.
STEPS FOR TRADEMARK REGISTRATION IN CHINA
1. Trademark Search
This is a search done to verify the qualifications of the trademark, whether or not it will pass the requirements for registration. This step can save you the expense of filing for an application which has little to no probability of being accepted.
2. Submit Application
This step requires the following information:
· Letter of instruction
· Name, address, and citizenship of the applicant
· Sample of trademarks in black and white; Nature of business
· List of goods to be covered by the trademark application and international class
· Specification of color of the trademark
3. Notice of Acceptance
You will be issued a Notice of Acceptance within 45 working days upon the CTMO’s receipt of your application.
The China Trademark Office will conduct an examination on your trademark after you have paid the necessary fees. From there, you will be informed of the results.
Once you have passed the examination, the trademark will be published in the Trademarks Journal for 3 months awaiting an opposition. If there is no notice of opposition, the application will continue with the registration.
After the application has been approved, a detailed information of the trademark will be recorded and you will be supplied with a registration certificate.
NOTE: Your right the owner of the trademark begins from the date of submission of your application. Usually, application runs for about 12 – 18 months with the successfully registered trademark valid for 10 years. Renewal is considered necessary. For payments and fees, click here.